Passionate about IP! Since June 2003 the IPKat has covered copyright, patent, trade mark, info-tech, privacy and confidentiality issues from a mainly UK and European perspective. The team is Eleonora Rosati, Annsley Merelle Ward, Neil J. Wilkof, and Merpel. Nicola Searle is currently on sabbatical. Read, post comments and participate! E-mail the Kats here

The team is joined by GuestKats Mirko Brüß, Rosie Burbidge, Nedim Malovic, Frantzeska Papadopolou, Mathilde Pavis, and Eibhlin Vardy

Monday, 30 April 2007

The IPKat's second breakfast of the day coincided with the INTA Professors' Breakfast Meeting. Although the breakfast was conducted deep in the bowels of the McCormick Center, the discussion was fresh and wholesome. After a few false starts and halting beginnings, the relationship between the academic community and the INTA has matured encouragingly.

The topics discussed, under the benign eye of INTA President Dee Ann Weldon-Wilson (Exxon Mobil, left) and other INTA worthies, included the integration of law teachers and students into the wider INTA programme, the need for academic writing to remain relevant and attractive to trade mark owners and practitioners (correlative to this there is a need for owners and practitioners to pay more attention to the results of university research), greater involvement of academics in the Association's often technical and complex committee work, and who had the most badge ribbons. One learned professor from Kentucky claimed to be this year's ribbonmeister, but the IPKat continues to spread the rumour that one highly-committee'd INTA star, whose ID he will gallantly protect, could run around Chicago clad only in her badge ribbons without any offence against modesty.

The IPKat next failed to gain entrance to this year's big event, which was packed to the rafters: representatives of the big internet companies were being hoisted before the trade mark lobby and asked to justify adwords, pop-ups and alien banners. Given the sheer power of the internet companies and the righteous indignation of the trade mark interests, this might be one of those cases in which the lions were fed to the Christians.

Privately, several responsible people mentioned to the Kat that, while the present situation might be legal, it was not tolerable, and that a negotiated settlement of the balance of interests of those who own trade marks and those who sell them as adwords would be the best basis on which to found any future legislation.

The rest of the working day was spent in good old-fashioned networking. The IPKat learned from Chris Morcom QC that the real problem with this year's venue was not the somewhat charmless nature of the interior but its remarkable capacity for making INTA look small. He also learned a good deal about what people think about (i) each other, (ii) themselves and (iii) their clients - which is, it seems, what a lot of networking actually is.

The evening was reception time again, the highlights being (i) the IPKat being unable to find the way into Soldier Field for the Arent Fox reception, having foolishly approached it on foot, (ii) the Meet the Bloggers drinks at the Billy Goat Tavern, at which IP bloggers and their readers got together for some mutual back-patting and (iii) the Brinks Hofer Gilson & Lione reception at The House of Blues, at which veteran trade mark law practitioner and commentator Jerome Gilson and his delightful wife Jamie twinkled like stars in the the iconic venue's stygian gloom.

The Times reports on an album that is being distributed to MPs to highlight the fact that the performers’ rights are going to expire on a number of popular tracks in the near future. The 50 year term is out of step with the life plus 70 year term afforded to those who write the music and lyrics. Called ‘Copyright Gap’, the album features tracks from a range of artists dating from 1957 to 2006 and has been compiled by PPL. Amongst the contributions made by the artists or their families are Lonnie Donegan’s Cumberland Gap, the performers’ rights in which expire this year.The IPKat thought that this one had been put to rest with Andrew Gowers’ rebuff of those who lobby for extended performers’ rights. Frankly, the IPKat is unimpressed. Mrs Donegan says that

“His [her late husband Lonnie Donegan’s] recordings of Rock Island Line and Cumberland Gap are effectively worthless once the copyright term ends. It’s not even as though they made us rich. People say I must be a millionaire but, no, the royalties were just enough to get by.” Since when, asks the IPKat, was there a right to be made rich?

The rest of the working population doesn’t have an automatic right to a pension, over and above the state pension. They either pay into an employer’s pension or, if self-employed, pay into one themselves.

This year's International Trademark Association (INTA) Meeting, ostensibly its 129th (though most of its predecessors were under the name of the United States Trademark Association), is by far the largest, with a record 8,524 pre-registrants, to which must be added those folk who just turn up at the event and register on-site. The venue, McCormick Place (right), is a vast and still-expanding facility which is as starkly and unappealingly utilitarian on the inside as it is strikingly handsome on the outside. Still, its functionality lies in its flexibility, which is just what an event like the INTA Annual Meeting needs when it has to cater for so many different types of meeting and presentation.

After registering and collecting the statutory black bag containing everyone else's registration details and an updated programme, the IPKat wiled away a couple of hours in catching up on the news with friends and colleagues from around the world. INTA is great for networking - the area just outside the Exhibit Hall being the best place to pick up on old acquaintances and make new ones.

Next on the IPKat's list of things to do was his annual visit to the Vossius reception. This involved venturing bravely forth from the McCormick to the Hyatt Regency Chicago (the Meeting's Headquarter Hotel, left) on the INTA shuttle bus. On his return, the Kat crossed numerous receptions off his "to-do" list on the basis that, given the size of Chicago and the time taken to get from place to place, it simply wasn't possible to get to them all. This is a pity: many firms go to great efforts to organise thoroughly pleasant and social events, but that effort does not always yield rewards. On the subject of hotel names, the Kat noted that eight of the nine "official" hotels contained the word 'Chicago' within its name. This is presumably to distinguish the hotel more easily from other hotels in the same group but from different cities, but for a foreigner in Chicago it tends to create the impression that all the hotels are called The Chicago Hotel.

After a brief tour of the Exhibit Hall and a meeting on the Berlin 2008 INTA programme the IPKat did something he rarely does, and even more rarely admits to doing: he attended the Opening Ceremony. The keynote speaker was James A. Skinner, Vice-Chairman and CEO of McDonald's Corporation, who spoke on the development and sustained effectiveness of the McDonald's brand. This was a remarkably interesting talk. At INTA there are no value judgments concerning "good" or "bad" brands, the organisation being premised on the notion that the protection of the law is open to all trade marks, irrespective of the economic, environmental, political or cultural impact of the goods or services sold under those marks. So, whether you're lovin' it or loathin' it, the experiences of McDonald's and its responses to both competition and criticism are well worth our attention.

Mr Skinner (left) explained the company's commitment to Quality, Service, Cleanliness and Value and its attempt to balance of interests between the company itself, its franchisees and its suppliers: only if each of the three can maximise its gains from its relationships will the enterprise truly succeed. He then outlined the fourfold evolution of a successful brand, moving from (i) the establishment of a distinctive identity, through to (ii) familiarity with the public, on the basis that familiarity breeds comfort, then (iii) the making of a set of specific and deliverable promises (in this case, "forever young"), and (iv) the building of a brand with authority - a brand that is the most trusted and admired in whichever sector it chooses to compete. It occurred to the IPKat that, while references to the consumer abounded in Mr Skinner's speech, the consumer did not appear to have a formal role within his brand development structure. That is not to say that McDonald's does not listen to consumers (the evidence is that it is increasingly doing so), but rather that the assumption is that the consumer is there to be led - not to lead.

But this is a debate that must continue on another day for the IPKat, after a failed attempt to network at the "Red Hot Chicago" evening reception at which the music drowned out his best efforts at conversation, hung up his whiskers and went to bed. After all, he has to conserve his strength for Tuesday's 5K run.

Sunday, 29 April 2007

As reported on the environmental news and commentary site Grist here, Monsanto are due to face proceedings at the EPO this coming Thursday (3 May) in an appeal regarding their European patent on genetically modified soya.

Hope Shand, the research director of one of the opponents of the patent, the neo-Luddite green group "Action Group on Erosion, Technology and Concentration" or ETC, writes,

"Instead of fostering agricultural research, breathtakingly broad patents are shutting down competition and stifling research. Perhaps no patent symbolizes the brokenness of the patent system more than Monsanto's European patent on all genetically engineered soybean varieties and seeds -- European Patent No. 301,749. Critics call it a "species-wide" patent because its claims extend to all biotech soybean seeds-- irrespective of the genes used or the genetic engineering technique employed -- unprecedented in its broad scope"

On Thursday, ETC will attempt to have the patent revoked "because it is technically flawed and morally unacceptable", according to Hope Shand.

The patent itself (prosecution file available here) is directed to a particular method of inserting 'foreign' genes in soybean cells, involving firing small inert particles containing the foreign gene sequences into soybean cells at high speed, with the result that some of the cells then take up this material and can be propagated to produce stable genetically altered lines. This method was not known to work for soybeans at least before the filing date of the patent, 20 July 1988, but the technique had been described previously in published journal papers.

There are a number of other objections to the patent, but the main one appears to come down to the form of claim 17, which claims,

"A soybean seed which will yield upon cultivation a soybean plant comprising in its genome a foreign gene effective to cause the expression of a foreign gene product in the cells of the soybean plant"

This claim is clearly broader than the methods disclosed in the patent, and appears to cover any genetically modified soybean seed, i.e. one having a 'foreign' gene in its genome. None of the opponents were able, during opposition proceedings, to show that GM soybeans were known before the patent was filed.

The question appears to the IPKat to be whether such broad claims should be allowed, when only one particular way of doing it was disclosed in the patent. If nobody else had been able to do it before the patent was filed, does this give the patent holder the exclusive right to prevent others from making GM soybeans, by whatever route? Does this matter? Why is this different from allowing protection for new pharmaceutical products? Shouldn't the first invention in a new field be allowed a justifiably broader scope? The IPKat leaves these questions open for others to discuss, and looks forward to seeing how the appeal goes.

The IPKat is delighted to announce that team blogger Jo Gibson has been elevated to the exalted rank of Professor at the Queen Mary Intellectual Property Research Institute, University of London (known as QMIPRI - an abbreviation which Jo even manages to pronounce as though it were a real word). It's not just any old Chair either: Jo is to share tenure of the Herchel Smith Chair in Intellectual Property Law. Congratulations, Jo!

Right: Kats and chairs have a particular affinity

Readers of this blog who have long memories will recall that the IPKat used to host lunchtime seminars and Thursday late afternoon talks at Queen Mary's Charterhouse Square campus. Jo is keen to kick-start a new series of the same, which with luck should be hosted in the rather more central vicinity of Lincoln's Inn in the coming academic year (details to follow, so don't write in now unless you're volunteering to speak or want to pay for the refreshments!)

The IPKat is also pleased to see that the first few sponsorships have come in for his 5 km run this Tuesday afternoon (details here). Online donations may be made here (for Headway) and here (for the American Brain Tumor Association).

Saturday, 28 April 2007

At last, the story can be told: Parallel Trade in Europe: Intellectual Property, Competition and Regulatory Law - written by the IPKat's friend, Milbank solicitor Christopher Stothers - has finally been published. The IPKat attended the launch party on Thursday at Milbank's splendidly appointed offices, and discovered an impressive rollcall of distinguished lawyers in attendance.

Right: Mondrian made parallels into an art form. Has Chris Stothers done the same with parallel trade?

Chris himself is ambidextrous (in the sense that he can cope as comfortably with IP law as competition law), but the IPKat reckoned that the IP lobby outnumbered the competitionists, possibly because IP lawyers take more interest in the effect of competition law on IP rights than competition lawyers do. The event was garlanded with some appropriate comments from Sir Hugh Laddie, who correctly observed that the author's approach to his subject and consequent analysis reflected his trade mark calmness. Sir Hugh's contributions to the evening, both on and off the record, was probably the cause of many of those present spending rather longer there than they had originally intended.

As for the book itself, the publisher's blurb states:

"Are parallel importers the key to free trade, breaking down long-established national barriers for the benefit of all? Or do they instead just operate in a dubious 'grey market' for their own profit, free-loading on the investment of innovators and brand owners to the ultimate detriment of everyone? Parallel trade is in turn lionised and demonised, both in legal commentary and in the mainstream press. As one might expect, the truth lies somewhere between these extremes.

Once goods have been manufactured they are put onto the market in one country by the manufacturer. Parallel trade occurs when the goods are subsequently transferred to a second country by another party (the parallel trader, who may be the end consumer). The distinguishing feature of parallel trade is that the manufacturer did not intend those particular goods to end up in the second country. The goods are normally described in that country as 'parallel imports' or 'grey market goods'. The latter term is generally used to suggest that the trade, while not exactly 'black market', is not entirely lawful either.

Understanding how European Community law operates to permit or restrict parallel trade involves exploring a complex matrix of rules from the fields of free movement, intellectual property, competition and regulatory law, including both private and public enforcement regimes. Where goods are parallel imported from outside the Community these rules change and new considerations come into play, such as obligations arising from the European Economic Area, the World Trade Organization and bilateral free trade agreements. The experience of Europe, which has grappled with the issues on a regional basis for more than four decades, provides a fertile source for examination of parallel trade in other jurisdictions.

Right: crates of cheap imported drinks at the docks, on their way to the book launch ...

Christopher Stothers' comprehensive treatment successfully analyses this difficult topic, considering both Community and national decisions".

Bibliographic details: published by Hart Publishing. Price: £95. 526 pages, hardback. ISBNs 1-84113-437-6 and 9781841134376. Rupture factor: small. Aesthetic appeal of cover design: boringly low (if you pay a lot for a book, it has to look grimly serious so there's no piccie on the cover: this helps make expensive books cheaper to produce than cheap books). Full details available on the internet here

Friday, 27 April 2007

Nhan Dan reports that the first copyright trading floor opened in Ho Chi Minh City yesterday. The idea is that it will operate once a month to bring authors and businesses together. It is a collaboration between the Vietnam Book and Directory (Vietbooks), the Vietnam Copyrights Service Company (Vietcopyrights) and the Copyright Department under the Ministry of Culture and Information.

The IPKat reckons that this is an intriguing idea. Although is smacks of major commoditisation, it could seriously benefit creative people by enabling them to bring their work before multiple potential investors, as long as they can access the trading floor.

Following his attempt to pass himself off as a serious athlete at the International Trademark Association (INTA) Meeting last year, IPKat team blogger Jeremy is running again ("competing" would be too strong a word) in the 5 Kilometre Run at this year's INTA Meeting in Chicago.

This year Jeremy is attempting to raise money for two charities: Headway, in the United Kingdom, and the American Brain Tumor Association in the United States. The common factor is the brain: as IP enthusiasts, practitioners, teachers and owners we all depend upon intellectual product for our livelihoods - and these two charities exist to aid those who, through tragic accident or dreadful disease, have their intellectual and physical abilities impaired.

Unlike last year, Jeremy has managed to sort out the online donation side of things properly this time. So if you'd like to sponsor his participation in the 5K Run by donating to either of these causes (or both, if you are feeling really extravagant), you can do so by clicking here (for Headway) and here (for the American Brain Tumor Association).

Thursday, 26 April 2007

The two big trade mark decisions of the European Court of Justice today have been a little overshadowed by the festivities for World Intellectual Property Day, but the IPKat took just enough time off from his ecstatic celebrations to check the Curia website and see what the ECJ had in store for him.

Right: objection to the repackaging of pharma products has led to some grey goods traders taking extreme measures to avoid trade mark infringment litigation

Case C-348/04, Boehringer Ingelheim KG and Boehringer Ingelheim Pharma GmbH & Co. KG v Swingward Ltd (that's the short version of the case name, which covers a whole side of A4): this was a re-referred case from the UK on a variety of questions relating to trade mark infringement where a trader buys an original pharma manufacturer's trade mark-protected goods and repackages them, relabels or overstickers them or otherwise makes the appearance of the packaging look quite different. When has he only done what's necessary for the purpose of selling them lawfully in another country, and when has he so changed the original product as to deprive himself of the right to rely on "exhaustion of rights" doctrine? The referred questions this time round were complex but specific (to avoid the risk of referring this dispute to the ECJ for a third time):

"Reboxed products

(1) Where a parallel importer markets in one Member State a pharmaceutical product imported from another Member State in its original internal packaging but with a new exterior carton printed in the language of the Member State of importation (a “reboxed” product):

(a) does the importer bear the burden of proving that the new packaging complies with each of the conditions set out in Joined Cases C-427/93, C-429/93 and C-436/93 Bristol-Myers Squibb [and Others] [1996] ECR I-3457 or does the trade mark proprietor bear the burden of proving that those conditions have not been complied with or does the burden of proof vary from condition to condition, and if so how?

(b) does the first condition set out in Bristol-Myers Squibb as interpreted in Case C-379/97 Upjohn … [1999] ECR I-6927 and Boehringer Ingelheim and Others, namely that it must be shown that it is necessary to repackage the product in order that effective market access is not hindered, apply merely to the fact of reboxing (as held by the Court of Justice of the European Free Trade Association in Case E-3/02 Paranova v Merck) or does it also apply to the precise manner and style of the reboxing carried out by the parallel importer, and if so how?

(c) is the fourth condition set out in Bristol-Myers Squibb and Others, namely that the presentation of the repackaged product is not such as to be liable to damage the reputation of the trade mark or its owner, only infringed if the packaging is defective, of poor quality or untidy or does it extend to anything which damages the reputation of the trade mark?

(d) if the answer to Question l(c) is that the fourth condition is infringed by anything which damages the reputation of the trade mark and if either (i) the trade mark is not affixed to the new exterior carton (“de-branding”) or (ii) the parallel importer applies either his own logo or a house-style or get-up or a get-up used for a number of different products to the new exterior carton (“co-branding”) must such forms of box design be regarded as damaging to the reputation of the trade mark or is that a question of fact for the national court?

(e) If the answer to Question l(d) is that it is a question of fact, on whom does the burden of proof lie?

Overstickered products

(2) Where a parallel importer markets in one Member State a pharmaceutical product imported from another Member State in its original internal and external packaging to which the parallel importer has applied an additional external label printed in the language of the Member State of importation (an “overstickered” product):

(a) do the five conditions set out in Bristol-Myers Squibb and Others apply at all?

(b) If the answer to Question 2(a) is yes, does the importer bear the burden of proving that the overstickered packaging complies with each of the conditions set out in Bristol-Myers Squibb and Others or does the trade mark proprietor bear the burden of proving that those conditions have not been complied with or does the burden of proof vary from condition to condition?

(c) if the answer to Question 2(a) is yes, does the first condition set out in Bristol-Myers Squibb and Others as interpreted in Upjohn … and Boehringer Ingelheim and Others, namely that it must be shown that it is necessary to repackage the product in order that effective market access is not hindered, apply merely to the fact of overstickering or does it also apply to the precise manner and style of overstickering adopted by the parallel importer?

(d) if the answer to Question 2(a) is yes, is the fourth condition set out in Bristol-Myers Squibb and Others, namely that the presentation of the repackaged product is not such as to be liable to damage the reputation of the trade mark or its owner, only infringed if the packaging is defective, of poor quality or untidy or does it extend to anything which damages the reputation of the trade mark?

(e) if the answer to Question 2(a) is yes and the answer to Question 2(d) is that the fourth condition is infringed by anything which damages the reputation of the trade mark, is it damaging to the reputation of a trade mark for this purpose if either (i) the additional label is positioned so as wholly or partially to obscure one of the proprietor’s trade marks or (ii) the additional label fails to state that the trade mark in question is a trade mark owned by the proprietor or (iii) the name of the parallel importer is printed in capital letters?

Notice

(3) Where a parallel importer has failed to give notice in respect of a repackaged product as required by the fifth condition of Bristol-Myers Squibb and Others, and accordingly has infringed the proprietor’s trade mark(s) for that reason only:

(a) is every subsequent act of importation of that product an infringement or does the importer only infringe until such time as the proprietor has become aware of the product and the applicable notice period has expired?

(b) is the proprietor entitled to claim financial remedies (i.e. damages for infringement or the handing over of all profits made by infringement) by reason of the importer’s acts of infringement on the same basis as if the goods had been spurious?

(c) is the granting of financial remedies to the proprietor in respect of such acts of infringement by the importer subject to the principle of proportionality?

(d) if not, upon what basis should such compensation be assessed given that the products in question were placed on the market within the [European Economic Area] by the proprietor or with his consent?’".

If you thought that this was a helluva lot of question, just wait till you read the answer. Ruled the Court, in what it must pray will be the final time these issues trouble them:

"1. Article 7(2) of ... Council Directive 89/104... is to be interpreted as meaning that the trade mark owner may legitimately oppose further commercialisation of a pharmaceutical product imported from another Member State in its original internal and external packaging with an additional external label applied by the importer, unless

– it is established that reliance on trade mark rights by the proprietor in order to oppose the marketing of the overstickered product under that trade mark would contribute to the artificial partitioning of the markets between Member States;

– it is shown that the new label cannot affect the original condition of the product inside the packaging;

– the packaging clearly states who overstickered the product and the name of the manufacturer;

– the presentation of the overstickered product is not such as to be liable to damage the reputation of the trade mark and of its proprietor; thus, the label must not be defective, of poor quality, or untidy; and

– the importer gives notice to the trade mark proprietor before the overstickered product is put on sale, and, on demand, supplies him with a specimen of that product.

2. The condition that the repackaging of the pharmaceutical product, either by reboxing the product and re-applying the trade mark or by applying a label to the packaging containing the product, be necessary for its further commercialisation in the importing Member State, as one of the conditions which, if fulfilled, prevent the proprietor under Article 7(2) of Directive 89/104, as amended by the Agreement on the European Economic Area, from opposing such commercialisation, is directed solely at the fact of repackaging and not at the manner and style of the repackaging.

3. The condition that the presentation of the pharmaceutical product must not be such as to be liable to damage the reputation of the trade mark and of its proprietor – as a necessary condition for preventing the proprietor, pursuant to Article 7(2) of Directive 89/104, as amended by the Agreement on the European Economic Area, from legitimately opposing further commercialisation of a pharmaceutical product where the parallel importer has either reboxed the product and re-applied the trade mark or applied a label to the packaging containing the product – is not limited to cases where the repackaging is defective, of poor quality, or untidy.

4. The question whether the fact that a parallel importer:

– fails to affix the trade mark to the new exterior carton (‘de-branding’), or

– applies either his own logo or house-style or get-up or a get-up used for a number of different products (‘co-branding’), or

– positions the additional label so as wholly or partially to obscure the proprietor’s trade mark, or

– fails to state on the additional label that the trade mark in question belongs to the proprietor, or

– prints the name of the parallel importer in capital letters,

is liable to damage the trade mark’s reputation is a question of fact for the national court to decide in the light of the circumstances of each case.

5. In situations such as those in the main proceedings, it is for the parallel importers to prove the existence of the conditions that

– reliance on trade mark rights by the proprietor in order to oppose the marketing of repackaged products under that trade mark would contribute to the artificial partitioning of the markets between Member States;

– the repackaging cannot affect the original condition of the product inside the packaging;

– the new packaging clearly states who repackaged the product and the name of the manufacturer;

– the presentation of the repackaged product is not such as to be liable to damage the reputation of the trade mark and of its proprietor; thus, the repackaging must not be defective, of poor quality, or untidy; and

– the importer must give notice to the trade mark proprietor before the repackaged product is put on sale and, on demand, supply him with a specimen of the repackaged product,

and which, if fulfilled, would prevent the proprietor from lawfully opposing the further commercialisation of a repackaged pharmaceutical product.

As regards the condition that it must be shown that the repackaging cannot affect the original condition of the product inside the packaging, it is sufficient, however, that the parallel importer furnishes evidence that leads to the reasonable presumption that that condition has been fulfilled. This applies a fortiori also to the condition that the presentation of the repackaged product must not be such as to be liable to damage the reputation of the trade mark and of its proprietor. Where the importer furnishes such initial evidence that the latter condition has been fulfilled, it will then be for the proprietor of the trade mark, who is best placed to assess whether the repackaging is liable to damage his reputation and that of the trade mark, to prove that they have been damaged.

6. Where a parallel importer has failed to give prior notice to the trade mark proprietor concerning a repackaged pharmaceutical product, he infringes that proprietor’s rights on the occasion of any subsequent importation of that product, so long as he has not given the proprietor such notice. The sanction for that infringement must be not only proportionate, but also sufficiently effective and a sufficient deterrent to ensure that Directive 89/104, as amended by the Agreement on the European Economic Area, is fully effective. A national measure under which, in the case of such an infringement, the trade mark proprietor is entitled to claim financial remedies on the same basis as if the goods had been spurious, is not in itself contrary to the principle of proportionality. It is for the national court, however, to determine the amount of the financial remedies according to the circumstances of each case, in the light in particular of the extent of damage to the trade mark proprietor caused by the parallel importer’s infringement and in accordance with the principle of proportionality".

It is impossible even for the IPKat to come up with a slick conclusion in so short a time, particularly while under the influence of catnip, but he hopes to return to this ruling in due course. Adds Merpel, this ruling looks a little more pharma-friendly in that it seems to put the burden on the parallel importer to prove the legitimacy of his actions rather than on the trade mark owner to prove their unlawful nature. The second case before the ECJ today,C-412/05 P, is Alcon Inc v OHIM, Biofarma SA, which arises from a Community trade mark application. In short, in 1998 Alcon applied to register the word TRAVATAN as a CTM for ophthalmic pharmaceutical preparations. Biofarma opposed, alleging a likelihood of confusion and citing its earlier Italian word mark TRIVASTAN for “pharmaceutical, veterinary and hygiene products; dietary products for infants or patients; plasters; materials for dressings; tooth fillings and dental impressions; disinfectants; herbicides and pesticides”. After Biofarma was put to proof of use of its earlier mark, proof was furnished for a “peripheral vasodilator intended to treat peripheral and cerebral vascular disturbance and vascular disorders of the eye and ear”. The Opposition Division agreed that there was a likelihood of confusion and refused the application, in a decision upheld both by the Board of Appeal and the Court of First Instance. Alcon appealed on various grounds, particularly challenging the notion that in respect of pharma products such as those in question, which were available in part on prescription, the relevant consumer should be taken to be the public at large rather than healthcare professionals.Advocate General Juliane Kokott advised the ECJ to dismiss Alcon's appeal, which is what it has done. The ruling contains some interesting observations on the identification of the "relevant public" and the comparison of similarity of goods, but the IPKat's first reading has spotted nothing earth-shattering.

This most auspicious date is more than merely World Intellectual Property Day, the IPKat is pleased to inform his readers. Let us salute our noble Lord Justice of Appeal, Sir Robin Jacob, whose birthday it is today. A distinguished author and former practitioner in the field of IP, Sir Robin is probably the leading judicial authority on the role of the nerd in inventive step and the difference between a nerd and a complete android.

Right: Life for the judiciary can be tough. Now that judges in England and Wales are preparing to abandon the wearing of wigs in civil litigation, it is necessary for them to trial other, more modern and less conspicious head-coverings.

His Lordship also has a strong opinion about letting patent owners keep the damages they are awarded and the licence fees they receive, even if the patent is subsequently found to be invalid (on which see yesterday's post). Adds Merpel, while Sir Robin is rightly extremely critical of the high cost of lawyers' fees in IP litigation, he probably feels - by analogy - that those who charged top rates while he was at the Bar should be able to keep their earnings too ...

In a stunning announcement from their Anaheim, Ca., laboratories, a team of scientists from Disney Biosciences has claimed a major breakthough in asexual reproductive technology - the first-ever cloning of a cartoon character. The character in question is Mickey Mouse, who was once a popular screen star but has made few movies in recent years. Mr Mouse, who will be 79 this November, is now relatively reclusive - though sightings have been reported as far apart as Orlando, Fl., Paris France and Hong Kong. Now that Mr Mouse has been cloned, it will be possible for Disney Studios to exploit his pristine personality without fear of genetic deterioration. It is hoped that Mr Mouse, formerly known as Steamboat Willie on account of his exploits, will be able to sire a new generation of lookalikes.

The original Mickey Mouse (left) and the cloned version (rights). Scientists and theatre critics claim they are identical and even Ms Mouse is hard-pressed to tell them apart.

A spokesman for Mickey's long-time on- and off-screen partner Minnie welcomed the development. Meanwhile the USPTO has confirmed that Disney's patent attorneys have applied for monopoly protection. The patent claims are for

"1. A method of cloning a non-human mammal, the method comprising the steps of:

removing from a physical representation of the mammal body one or more samples comprised within a cel;

introducing the one or more samples into a cel replicating machine;

preparing in the cel replicating machine one or more new cels comprising a representation of a cloned copy of the mammal,

wherein the replicating machine is configured to alter at least a portion of the representation of the cloned copy of the mammal.

2. The method of claim 1 wherein the non-human mammal is of the genus mus.

3. The method of claim 2 wherein the non-human mammal is of the species mus musculus.

4. The method of claim 1 wherein the non-human mammal is of the species cattus felis silvestris.

5. The method of any preceding claim wherein the non-human mammal is a fictional character".

Meanwhile, lawyers for Looney Tunes' parent company Warner are considering legal action in respect of Claim 4 which, they maintain, is for an extension of the newly-disclosed cloning technology to a fictional character, Sylvester J. Pussycat, Sr., (right) in whom they own the copyright.

Wednesday, 25 April 2007

The IPKat has learnt about a slightly odd little decision of Mr Hearing Officer Landau, from (what was then) the UK Patent Office.

In a nutshell, the applicant applied for MICHELE X in a bubble-type fancy script. The opponent opposed, citing a likelihood of confusion based on its mark consisting of the phrase MICHELE THAT’S FASHION in a cursive script.

Certain of the goods were identical so, one might think that since both marks contain the dominant term MICHELE, this would be a shoe-in for a successful opposition. Not so, according to Mr Hearing Officer Landau. Although the opponent claimed that its mark contained the term MICHELE, the script was such that the relevant consumer would see the term as either WICHELE or CCCICHELE. Thus, there was only slight visual similarity. If consumers did see the mark in that way then it followed that they would pronounce them pretty differently and there would be no conceptual similarity.

The IPKat isn’t sure about this decision. While it’s right to look at consumer perception, he reckons consumers aren’t stupid, and when faced with a slightly ambiguous-looking word, they will read it in a way that makes sense, rather than as a coined term.

"If a patentee utterly prevails on infringement and validity and is held entitled to financial compensation in the Courts of England and Wales right up to the point where no further appeal lies, can all that be set at nought and utterly unravelled if the patent is later held invalid in the European Patent Office?"

In two senses the court's ruling is academic. First, after their Lord/Ladyships wrote their judgments but before they delivered them, the parties agreed to the preparation of a consent order. Secondly, the opposition proceedings that may result in the claimant's patents being declared invalid have not yet been concluded. Without going into the factual details of this dispute or the close legal reasoning arising from them (topics that other members of the IPKat team may choose to address later), this team member just wants to highlight a couple of the observations made by Jacob LJ, who gave the main judgment with which his colleagues concurred.

It is meaningless to decide the question on the basis of whether the national court or the EPO is "top dog". As Jacob LJ says (at para.26):

"Nor does it help to ask whether a national court or the EPO is "top". It all depends on the circumstances, as the two following scenarios illustrate:

(i) The patent is still under opposition when a national court holds it valid and the EPO then revokes. So the EPO is "top";

(ii) The EPO holds the patent valid and a national court subsequently revokes it (there is no estoppel created by an EPO decision as to validity, see Buehler v Chronos [1998] RPC 703). So the national court is "top."

In truth asking which tribunal is "top" is simply not helpful – there is just the untidy compromise inherent in the EPC and one which cannot be properly resolved unless and until a rational patent litigation system for Europe is created".

It is sensible to make a party pay damages for infringement even where the infringed patent is later held invalid. At paras 44 to 46 Jacob LJ says:

"Now a purist may say: it is a nonsense, and moreover an unjust nonsense, for a man to have to pay for doing what, with hindsight, we know to have been lawful. The purist might, I suppose, also say that a licensee who has paid royalties under a patent subsequently revoked ex tunc should get his money back. He might even say that a man who lost profits by refraining from some commercial activity by reason of a fear, now known to be groundless, of infringing the patent should have some remedy.

But I think there are good and pragmatic reasons why the purist approach makes bad business sense. You cannot unravel everything without creating uncertainty. And where a final decision has been made on a fair contest between the parties, that should stand as the final answer between them.

In a sense a patent is always potentially at risk – someone may come up with a bang-on but obscure piece of prior art (my favourite pretend example is an anticipation written in Sanskrit wrongly placed in the children's section of Alice Springs public library), or simply with better evidence on known prior art. That is no reason for undoing what has been done or regarding a final decision as merely provisional. After a final decision businessmen should be able to get on with their businesses, knowing what the position is".

This is very much a lawyer's analysis and the IPKat has some doubt as to whether a competition-minded economist [for it is they who rule the roost ...] would take the same view. Also, the Kat keeps re-reading Article 1 of Protocol 1 of the European Convention on Human Rights, which states:

"Every natural or legal person is entitled to the peaceful enjoyment of his possessions. No one shall be deprived of his possessions except in the public interest and subject to the conditions provided for by law and by the general principles of international law.

The preceding provisions shall not, however, in any way impair the right of a State to enforce such laws as it deems necessary to control the use of property in accordance with the general interest or to secure the payment of taxes or other contributions or penalties".

He is not a human rights lawyer and does not pretend to be, but he can't help speculating whether one's money is a protected possession, in the context of him being deprived of it for the sake of being made to pay damages to compensate a patent owner for infringing a right that should never have been granted in the first place.

Right: a litigant waves bye-bye to damages and costs -- he'll never see them again, even if patent he is held to infringe turns out to have been invalid all along.

Tuesday, 24 April 2007

Life is full of mysteries and curiosities. Some of these mysteries are from the world of nature (eg why does buttered toast always fall buttered side down?), but for other mysteries the explanation lies in the mind of man, not in the laws of physics. One such mystery is the appearance of the word "practical" in the title of Spyros Maniatis' Trade Marks in Europe: a Practical Jurisprudence. Spyros, a Professor of Intellectual Property Law at Queen Mary, University of London, is a serious, quietly-spoken and thoughtful teacher of his subject who does not overstate his case. The IPKat is sure that the idea of putting the word "practical" into the title must have come from the publishers, since this analysis is functional rather than practical: it shows how the interaction of legislation, litigant and court has combined to develop strands of thought, rather than offering the sort of fare that practitioners' tomes such as Kerly and Morcom provide (incidentally, this book cites none of the practitioners' works - they are arguably irrelevant to an exercise of this nature).

Spyros has done something that has long needed doing, by reading carefully the jurisprudence of the Court of Justice of the European Communities and her lively little sister the Court of First Instance, letting those courts' rulings speak for themselves and pinning their doctrines to specific provisions of European Community and national law to which they are relevant.

Left: The Budweiser trilogy gets 23 pages all to itself

The decisions are not one-dimensional either - reference is also made to the Opinions of Advocates General and to the travaux, both of which often betray more internal consistency and coherence than do the final judgments. By way of a bonus there is also a chapter on contemporary US Supreme Court jurisprudence - but its content is not conceptually integrated into the rest of the book and the IPKat feels it would have been strategically better to work it up into a companion volume on its own terms, rather than leaving it tucked away at the back of a book on European trade mark doctrine.

Frustratingly for all of us, the Court of Justice keeps on churning out decisions, some of which are easier to apply to the facts of the problems we face than to understand in terms of their doctrinal coherence. From the fact that Spyros' book describes itself as the first edition, we may take comfort that further help will soon be at hand.

Sisyphus (right), training for the really tough job - reading ECJ cases and making sense of them

Thanks to global warming the darling buds of May have been greatly in evidence this April. Legal publishers Sweet & Maxwell have also been experiencing an untimely rise of sap this spring, with the result that the May issue of the European Trade Mark Reports has also burst forth early in all its glory. Edited by two of the IPKat team, the ETMR contains some stunning decisions this month. They include, for the first time in English:

* Golden Rabbit, the decision of the Bundesgerichtshof in Germany that gives the sole right of abundant reproduction of chocolate Easter bunnies to Lindt on account of consumer perception of the rabbit's shape, fortunately registered as a trade mark;

* Vesta Forsikring AS v Trygg-Hansa AB, a Norwegian Supreme Court decision supplied by Felix Reimers (Grette, Oslo) on the extent to which the association of insurance companies in adjacent countries with lifebelts entitled them to register lifebelt devices as trade marks.

Other thoroughly enjoyable decisions in this issue include the ECJ rulings in Adam Opel and Dyson (see IPKat posts here and here). Don't forget, if you know of any interesting recent national or regional European trade mark cases that you think should be reproduced in the ETMR, just email the IPKat here and he'll see what he can do about it. Oh, and if you're attending this year's International Trademark Association (INTA) meeting in Chicago next week, be sure to visit the Thomson booth in the Exhibit Hall and pick up your free sample copy ...

'This year’s Day is focusing on the impact that books – especially when they are copyrighted – play in promoting not only education, economics, cultural creation and democratic participation, but freedom of expression and cultural diversity as well.

In a message on the Day, UNESCO Director-General Koïchiro Matsuura said that copyright provides valuable “moral and heritage protection” to works and their authors and is particularly vital to encouraging cultural diversity.’

The IPKat is all for the celebration of books, but he thinks that it’s unfortunate that the two UN bodies responsible for the days (UNESCO for 23 April and WIPO for 26 April) couldn’t coordinate their efforts a bit better.

Intellectual Property Watch reports that the chairman of the Administrative Council of the European Patent Office has been expressing a few thoughts on the future of the patent system, at a France-Switzerland Chamber of Commerce meeting in Geneva. Catherine Saez of IP Watch writes,

"At the 19 April event, Grossenbacher [...] gave a presentation on the influence of intellectual property on trade policy. He said that the overload of the new system and the increase in developing countries as users of the patent system is good news and will lead, in time, to the reduction of piracy and counterfeiting of goods.

He also said that stricter access to patentability should be instituted, putting an emphasis on quality over quantity, he said. Four factors should be absolute prerequisites for obtaining and granting a patent: Innovation, inventive activity (if outside the realm of the specialist), strict limitations on patentability (avoiding fields for which patents are not applicable, such as software), and a significant decrease in the delays in granting patents.

Grossenbacher advocated for stricter systems for granting patents and a strengthening of patent protection, though he warned against extremes in protection. Too much or too little protection can harm innovation, he said".

The IPKat thinks that we should pay careful attention to what Herr Grossenbacher has to say, since his position is a highly influential one (and will become more so after EPC2000 comes into force). Nothing he says appears too controversial (apart perhaps from the mention of software), but this Kat wonders how the improvements to the system are to be funded. An increase in examination fees, perhaps?

The IPKat notes that the ECJ will be delivering its judgment in the Boehringer Ingelheim parallel importation case this Thurusday. In this round of the ongoing mega-case, the England and Wales Court of Appeal has referred questions on the trade mark implications of:

repackaging

overstickering

the relevant notice that must be given by a repackaging to the trade mark proprietor

It's big, it's grey - and it's out today, all 2,000+ pages of it. The "it" in question actually deals with "IT", being the fourth edition of the Butterworths E-Commerce and Information Technology Law Handbook. Being consultant editor of this volume, IPKat team blogger Jeremy is in no fit state to judge it objectively. Accordingly he will confine himself to what the venerable publishers say on their website:

"As with its well-established brethren in the series, the Handbook has been assembled in a logical manner and contains a carefully referenced index. All practitioners in this field will benefit from having such a comprehensive collection of primary sources at their fingertips".

The tome's contents cover primary international, European Union and UK sources on e-commerce and information technology law, together with such useful information as whether and when various legal rules have been brought into force.

Left: also big and grey, the elephant has a much longer shelf-life than this Butterworths Handbook, but also takes up a lot more space on the shelf ...

Being unashamedly paper-based, it takes no time at all to download, will not crash, can be conveniently recycled or used as a substitute for personal hygiene tissues and will host literally thousands of coloured sticky tabs. Price: £116 (that's just 5.714 pence per page).

The IPKat has learnt from TorrentFreak that Hew Raymond Griffiths, the leader of warez site DrinkorDie has pleaded guilty to “conspiracy to commit copyright infringement” and “criminal copyright infringement” in the Eastern District of Virginia. The crimes carry with them a $500k penalty and up to 10 years in prison. Much of the case has been conducted while Griffiths has been in the ‘comfort’ of an Australian prison cell. Griffiths, who is a UK national who resides in Australia, has never visited the US. However, US extradition proceedings against him were commenced following the actions of US Customs. The Australian authorities have backed the extradition proceedings.

The IPKat is pretty horrified. Copyright infringement, particularly on a large scale, is clearly wrong, but extradition seems disproportionate. He’s also pretty surprised that Australia (and presumably the UK) are allowing this extradition action to take place. The Kat has a hazy recollection from his public international law days that taking jurisdiction against activities which have taken place against one’s citizens, but outside of one’s jurisdiction, is reserved for exceptional situations. Is copyright infringement really serious enough to count?

Sunday, 22 April 2007

The number of years until the European Community patent will be up and running , according to Gunther Verheugen, the German enterprise commissioner, speaking at the recent European Patent Forum (also see story here). German Chancellor Angela Merkel says, "patents are the future".

The IPKat looks forward to 2012, when it will all be sorted out. In the meantime, would anyone care to take a bet on the timescale being right?

The number in millions of dollars that CSR is paying to the Washington Research Foundation to stop their US customers being sued over WRF's patent (see story here, and previous IPKat post here).

left: Apollo 15 (the best one by far).

The number of dollars that each Windows user apparently pays to keep Microsoft patent lawyers happy, according to the Software Freedom Law Centre, reported here.

Saturday, 21 April 2007

Has it really gone all quiet on the IP securitisation front? After the flurry of activity at the beginning of the year (see IPKat posts here and here), and not a little controversy, readers may have felt that everyone is now sleeping soundly and that the problem of striking a balance between the protection of lenders who take IP security for their loans, and IP owners/licensees whose interests in using the IP must be taken care of, has simply evaporated - if there ever was a problem.

Right: the IPKat keeps a watchful eye on his collateralised IP rights

But things have been happening behind the scenes. Last month the International Trademark Association, a body that represents trade mark owners' interests, published its own lengthy and carefully thought-out thought-out position paper, Recordal of Security Interests in Trademarks. Also, following the January Colloquium in Vienna at which it at one time seemed that war was about to break out, UNICTRAL is now working closely with an ad hoc group of concerned IP experts, coordinated by Lorin Brennan (Gray Matter) with assistance from too many organisations and individuals to mention conveniently here, to finalise a note on future work that remains to be done before UNCITRAL's Legislative Guide can come to fruition. The IPKat just wants to say "well done" to the many individuals who, working on their respective sides, have taken such a constructive part in improving the economic environment for IP-based borrowers and lenders alike.

Friday, 20 April 2007

Friday 13th may be unlucky for some folk, but not for trolls, it seems. Back in 2005 in Troll Company A/S v Uneeda Doll Company Ltd Danish company Troll secured preliminary injunctive relief in the US to protect its fuzzy-haired Good Luck Troll doll (right) against Uneeda's predatory Wish-nik (below, left), the District Court ruling that the Wish-niks infringed copyright in the Good Luck Trolls. Uneeda said it had been selling Wish-niks dolls for 30 years and that the Good Lucks were in the public domain. Without being able to substantiate these claims, Uneeda failed to qualify as a "reliance party" that would enjoy a one-year sell-off period under the restoration legislation implemented by the Uruguay Round Agreements Act.

Last Friday the Second Circuit Court affirmed the injunction in a decision that construed for the first time the "restored copyrights" provision s.104A of the Copyright Act. There's a good post on this decision here on the Patry Copyright Blog. The ruling - by the other Judge Newman (i.e. Jon, not Pauline the Patent) - is also notable for a Brief History of Trolls. The IPKat is thrilled to know that modern judges have not abandoned the pursuit of true scholarship. Merpel says thanks to Craig S. Mende (Fross Zelnick Lehrman & Zissu) for sending him this item.

Emerging from the winter fastness of her New York hibernation, Miri Frankel has sent the IPKat this link to The Onion, which he unaccountably overlooked. On the theme of 'Fighting Chinese Piracy' this feature suggests some measures other than lodging WTO complaints that the US may wish to take in combating the piracy problem. They include

* sending Steven Spielberg on a goodwill mission to explain to average Chinese citizens how piracy hurts his ability to make a living;

* giving tax breaks to the entertainment industry for making products that are even less worth stealing and

* implementing a new security algorithm on all CDs and DVDs that will slow hackers down for up to three hours.

In February the yoghurt-loving IPKat brought news of an Irish High Court action brought by Danone against local dairy produce company Glanbia, which planned to double its market share with the introduction of 'shot-sized' Yoplait Essence yoghurt drinks. Damages of up to 10 million euros were sought for infringing Danone's word trade mark ESSENSIS.

The High Court (Mrs Justice Finlay Geoghegan) gave its ruling today and it's not what Danone expected. Far from scooping a damages jackpot, the company lost its trade mark ,which was revoked for non-use.

Right: happiness = a day in court and a good licking ...

Danone had been using the word ESSENSIS the whole time - but not as a trade mark. It was used instead as part of the phrase "bifidus ESSENSIS" in the list of ingredients of its BIO ACTIVIA yoghurt. Since the word had been registered as a trade mark for yoghurt, not for a bacterial culture, there was no use in relation to the goods for which it was registered. A further counterclaim for cancellation of the mark on the basis that it was registered in bad faith failed, since Glanbia didn't back its legal submissions with any adequate evidence.

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